Leland Stanford Junior (1824-93).

The Federal Circuit ruled last week that the Leland Stanford Junior University doesn't own rights in patents (involving methods to check effectiveness of HIV treatments) and therefore can't sue drug-maker Roche for infringement. 

The inventor, Mark Holodniy, signed contracts with both the Junior University (in 1988) and Roche's predecessor-in-interest (in the following year).  But, while the Stanford instrument said that Holodniy hereby "agree[s] to assign" patent rights, the latter said he "do[es] hereby assign" them.  Title vested in Roche, the court held, because a promise to assign doesn't effect a current transfer.  Board of Trustees of Leland Stanford Junior University v. Roche Molecular Systems, Inc., 08-1509 (Fed. Cir. Sept. 30, 2009).

The panel went on to rule that Roche waited too long to sue Stanford (by way of counterclaim) for a judgment declaring that Roche owns the patents.  A slide show that Stanford made to Roche in 2000 deemed Stanford the patent owner.  Under California law, the court ruled, that started the four-year limitations period on Roche's claim of ownership.  Time expired before Roche counterclaimed five years later.  Id., slip op. at 22-24.

What does it all mean?  That Stanford and Roche spent years and burned through millions to achieve a tie?  Not quite.  As a practical matter, Roche got a lot.  It beat an infringement claim and won the ownership fight.  It also overturned an invalidity ruling (nominally in its favor) that would've destroyed the value of patents, which it now owns and can try to enforce against others.

How much good the last part will do Roche will have to await events.  Having urged invalidity in the Stanford case, Roche faces a hard time changing its position should it choose to assert the patents against others.